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Cuozzo submits merits brief to High Court; argument set for April 25, 2016

As many are aware, the Supreme Court granted certiorari for Cuozzo Speed Technologies, LLC v. Lee, No. 15-446. The Supreme Court agreed to hear two issues appealed by Cuozzo: (1) whether the PTAB should use the BRI standard for claim construction in IPR rather than the plain and ordinary meaning standard applied in district court; and (2) whether the PTAB decision to institute an IPR proceeding should be judicially reviewable on appeal from a final written decision. Cuozzo has now submitted its merits brief on these issues.

Issue 1: PTAB’s Use of the BRI Standard

Regarding the first issue, Cuozzo argues that Congress never authorized the PTO to depart from the ordinary-meaning standard for adjudicating patent validity in IPR proceedings. Cuozzo explains that courts and the PTO have long distinguished between patent adjudication and patent examination. According to Cuozzo, adjudication of patent validity tests the fixed meaning of a legally-operative property right, while examination assesses the meaning of patent claims where the scope is in flux. Thus, Cuozzo argues that the plain meaning standard is appropriate in adjudication while the BRI standard is appropriate for examination.

Cuozzo also argues that the AIA’s text, structure, and legislative history show that Congress created IPR as a substitute for district court adjudication of patent validity, rather than as an extension of the examination process, so the plain meaning standard should be used. “Although the PTO has long given claims their broadest reasonable interpretation in examinational proceedings, it has done so to asses and, if necessary, adjust the scope of such claims, which are treated as fluid and amendable at the will of the applicant…The BRI protocol is used before the patent issues to ensure claim language is precise; use of that protocol in post-issuance IPR reintroduces needless ambiguity in determining validity.” (Br. at 12-13).

Regarding the second issue, Cuozzo argues that if the PTAB exceeds its statutory authority in deciding to institute an IPR proceeding, the decision is reviewable. Specifically, according to Cuozzo, the AIA grants the PTAB the power to institute IPR proceedings, but it places significant limits on such power, and the PTAB cannot violate these limits with impunity and without judicial oversight. Additionally, Cuozzo argues that the PTAB wrongfully interprets 35 U.S.C. § 314(d) as making its decisions on whether to institute an IPR final and non-appealable, even after a final written decision. Rather, Cuozzo explains, the statute only bars appeal of the PTAB’s institution decision itself. Additionally, Cuozzo argues that the PTAB’s institution decision is reviewable when it plainly violates the AIA.

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